Rykoff- Sexton, Inc.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 75045478 (T.T.A.B. Sep. 29, 1998)

Paper No. 9
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB SEPT 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Rykoff-Sexton, Inc.
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Serial No. 75/045,478
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Stephen Grubb, Esq. for applicant.
Angela Bishop Wilson, Trademark Examining Attorney, Law
Office 101 (R. Ellsworth Williams, Managing Attorney).
____________
Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Rykoff-Sexton, Inc. has filed a trademark application
to register the mark GIOVANNI for “cheese; meats, namely,
beef patties, beef wafer steaks, ham, meatballs, pepperoni,
salami, sausage, sliced steak, and steak chips; processed
peppers, namely, green pepper strips, roasted peppers and
pepper strips in brine; shortening and processed tomatoes,
namely, canned whole tomatoes and crushed tomatoes in heavy
Serial No. 75/045,478
2
puree,” in International Class 29, and “coffee, namely,
espresso; doughball; mayonnaise; pasta, namely, elbows,
fettuccine, lasagna, linguini, noodles, spaghetti and wagon
wheels; pizza sauce; spices, namely, basil leaves, bay
leaf, black pepper, processed garlic, monosodium glutamate
(MSG), oregano leaf, parsley flakes and red cayenne pepper;
vinegar” in International Class 30.1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the following previously registered marks, owned
by three different entities, that, when used on or in
connection with applicant’s goods, it is likely to cause
confusion or mistake or to deceive:
• GIOVANI’S for “flavoring syrups, namely almond
gourmet syrup, chocolate syrup, Irish Cream
syrup, Jamaican rum gourmet syrup and hazelnut
gourmet [syrup] for sale in the restaurant supply
industry” 2;
• GIOVANNI’S for “bakery products – namely,
bread”3;

1 Serial No. 75/045,478, in International Classes 29 and 30, filed
January 18, 1996, based on use in commerce, alleging dates of first use
and first use in commerce, in both classes, as of 1981.
2 Registration No. 1,940,288, issued December 5, 1995, on the
Supplemental Register, to Inventory Auditors, Incorporated, in
International Class 30.
3 Registration No. 1,194,807, issued May 4, 1982, to Wakefern Food
Corp., in International Class 30. The registration includes the
statement “the term ‘GIOVANNI’S is the Italian equivalent of “John’s.”
[Sections 8 and 15 affidavits accepted and acknowledged.]
Serial No. 75/045,478
3
[The two registrations that follow are owned by
the same entity.]
• GIOVANNI’S for “meat,” in International Class
29, and “restaurant services,” in International
Class 424; and
•
for “restaurant services.5
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register with
regard to Registration Nos. 1,194,807, 1,452,339 and
1,160,409; and we reverse the refusal to register with
regard to Registration No. 1,940,288.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods and

4 Registration No. 1,452,339, issued August 11, 1987, to Giovanni’s
Pizza, Inc. [Sections 8 and 15 affidavits accepted and acknowledged.]
5 Registration No. 1,160,409, issued July 7, 1981, to Giovanni’s Pizza,
Inc., in International Class 42. [Sections 8 and 15 affidavits accepted
and acknowledged.]
Serial No. 75/045,478
4
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Regarding the marks, the Examining Attorney contends
that applicant’s mark is substantially identical to the
marks in each of the cited registrations. Applicant does
not contest the Examining Attorney’s position or discuss
the marks in its brief. It is our view that applicant’s
mark is substantially similar in sound, appearance,
connotation and overall commercial impression to the mark
in each of the cited registrations. The mark in each of
the cited registrations consists of, or includes, the
phonetic equivalent of applicant’s mark, GIOVANNI. The
fact that one of the registered marks is spelled with a
single “N” and that each of the registered marks appears in
the possessive with an “’S” does not distinguish these
marks from applicant’s mark. Further, the design element
in Registration No. 1,160,409 does not detract from the
dominance of the word GIOVANNI’S in that mark. The type
style in which the word is shown, while relatively minor,
serves to accentuate the word; and the picture, which
appears to be of a chef carrying a pizza and roller skating
over the word, also serves to focus attention on the word
portion of the mark.
Serial No. 75/045,478
5
Thus, the question of likelihood of confusion turns
principally on the relationship between the goods and
services herein. As we have said many times before, there
is no per se rule regarding food items. The very fact that
the Examining Attorney has cited four registrations, owned
by three different entities, for a mark which is,
essentially, GIOVANNI for a variety of food items indicates
that the mark may be relatively weak and that careful
consideration must be given to the relationship between
applicant’s goods and those in the cited registrations to
determine if confusion is likely in each case. We address
this issue separately with respect to each of the cited
registrations.
Registration No. 1,940,288
The Examining Attorney contends that applicant’s
recited “coffee” is related to registrant’s flavoring
syrups because “coffee and favoring syrups are
complementary good items, with flavorings syrups often used
in coffee … [and] these goods are often sold together, in
the same trade channels and under the same mark.” In
support of her position, the Examining Attorney has
submitted several third-party registrations reciting both
coffee and flavoring syrup in the identifications of goods;
Serial No. 75/045,478
6
and two mail order catalogs as evidence “that these goods
are marketed as complementary goods.”
Applicant argues that no likelihood of confusion
exists because, “as used in restaurants and the like, no
trademarks are attached here, to the coffee or to the
flavoring syrup.”6
While flavoring syrups may be used in coffee, we are
mindful of the fact that the cited registration limits its
channels of trade to the “restaurant supply industry.”
Thus, the syrups are not general consumer items, but would
be sold to purchasers of restaurant supplies. Presumably,
such purchasers are relatively sophisticated about the
purchasing decisions being made in this regard and such
decisions are made with a degree of care. Because of this,
and because of the differences in the goods, we find that
confusion is not likely with respect to Registration
No.1,940,288.
Registration No. 1,194,807
The Examining Attorney contends that applicant’s
recited doughballs and meat products are related to
registrant’s bread because doughballs can be used to make
bread, and because meats and breads are often advertised

6 We will presume that applicant’s statement that “purchasers … would
associate these widely divergent products with the same source of
origin” involves a typographical error and we will disregard it.
Serial No. 75/045,478
7
together and sold together in delis, specialty stores and
grocery stores; that purchasers seeing the bread and meats
in close proximity to each other are likely to believe they
emanate from the same source; and that meats and bread are
complementary products used to make sandwiches. In support
of her position, the Examining Attorney has submitted
excerpts from cookbooks showing entries for meat-filled
sandwiches and several unidentified advertisements,
presumably from grocery stores, showing, on the same page,
advertisements for deli meats and for bread or rolls.
Applicant argues that there is no likelihood of
confusion because “it flies in the face of logic and common
sense” to speculate that applicant’s doughballs may be used
to make bakers’ items other than pizza crust; and that “the
consumer who buys sandwiches would [not] have any knowledge
of the source of meat or bread, and the skilled purchasing
agents who might handle products clearly can distinguish
such products as to source.”
We find the Examining Attorney’s argument based on a
relationship between applicant’s recited “doughballs” and
registrant’s goods to be unpersuasive. There is no
evidence in this record either that doughballs are made
into bread, or that the sources for doughballs, an
unfinished product, would be the same or related to the
Serial No. 75/045,478
8
sources for bread, a finished product that is ready for
consumption.
However, the Examining Attorney has provided some
evidence to indicate that meats and breads are advertised
together and may be sold in the same stores and, further,
that they are complementary products as both products may
be purchased together and used together to make sandwiches.
Thus, it is not unreasonable to conclude that consumers are
likely to believe that applicant’s meats come from the same
or related source as registrant’s bread. See, In re
Colonial Stores, Inc., 216 USPQ 793 (TTAB 1982) [likelihood
of confusion found between COUNTRY PRIDE for bread and
COUNTRY PRIDE for prepared meat products, despite weakness
of marks, in view of identical marks and complementary
goods which could be sold in same stores]. But see, Mr.
Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ
364 (Fed. Cir. 1986) [Court found no likelihood of
confusion between ROMANBURGER for sandwiches sold for
consumption on or off premises and ROMAN, ROMAN MEAL, and
several related marks, for goods including bread. However,
court focused on dissimilarities between marks, dissimilar
trade channels and lack of actual confusion over a period
of years.] We find this case more analogous to the
Colonial Stores case as our case also involves essentially
Serial No. 75/045,478
9
identical marks for breads, on the one hand, and meats on
the other. Further, if we had any doubt concerning our
conclusion that confusion is likely, we would be obligated
to resolve such doubt in favor of the registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed Cir. 1988). Thus, we find a likelihood of confusion
with respect to this registration.
Registration Nos. 1,452,339 and 1,160,409
The Examining Attorney contends that applicant’s
recited meats are identical to registrant’s “meats”; that a
number of applicant’s other recited goods are used in
making pizza, which may be served in registrant’s
restaurants; that food products and food services are
closely related; and that it is common for restaurants to
sell the food items served in the restaurants in grocery
stores and other retail outlets. In support of her
position, the Examining Attorney has submitted excerpts of
articles from the LEXIS/NEXIS database.
Applicant argues that there is no likelihood of
confusion because registrant operates a chain of pizza
restaurants in Kentucky and Ohio and there is no indication
Serial No. 75/045,478
10
“that registrant engages in conventional retail sales of
meats or any other retail products.”7
Applicant’s identified goods, various specified meats,
are identical to the goods identified in Registration No.
1,452,339, meats. In view of the fact that applicant’s
mark is substantially identical to registrant’s mark and
their goods are identical, we find that a likelihood of
confusion exists as to the source or sponsorship of such
goods.
We also find that a likelihood of confusion exists as
to the source or sponsorship of applicant’s identified
goods and registrant’s restaurant services. The record
supports, and applicant does not dispute, that restaurants
offer for sale, both on and off their premises, private
label food products. In fact, Registration No. 1,452,339

7 We find applicant’s statement unsupported in this record and not
relevant to the issue before us. The report submitted in support of
this statement by applicant with its brief is untimely and, thus, will
be given no consideration. Applicant did not comply with the
established rule that the evidentiary record in an application must be
complete prior to the filing of the notice of appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Further, even if the report had properly been made of record,
applicant’s contentions in this regard are unavailing as the
registrations are geographically unrestricted and the identifications
are broadly worded, containing no limitations as to the type of
restaurant services. “The question of likelihood of confusion must be
determined based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-vis the goods
and/or services recited in [the] registration, rather than what the
evidence shows the goods and/or services to be.” Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987).
Serial No. 75/045,478
11
includes both meats and restaurant services, indicating
that registrant itself both sells food products and offers
restaurant services. Certain of applicant’s identified
goods, for example, pizza sauce, processed peppers and
pasta, are products that could be packaged for sale as
finished products by a restaurant and made available to
consumers either at the restaurant or in supermarkets and
specialty food stores. Further, if we reasonably conclude
from the design element in one of registrant’s marks that
registrant’s restaurant services include the sale of pizza,
we note that at least some of the food products recited in
the application are used to make pizza or as toppings for
pizza. All of these factors lead us to conclude that
applicant’s goods are related to registrant’s restaurant
services.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, GIOVANNI, and registrant’s marks, GIOVANNI’S in
Registration No. 1,452,339, and GIOVANNI’S and design in
Registration No. 1,160,409, their contemporaneous use on
the related goods and services involved in this case is
likely to cause confusion as to the source or sponsorship
of such goods and services.
Serial No. 75/045,478
12
Decision: The refusal under Section 2(d) of the Act
is affirmed with regard to Registration Nos. 1,194,807,
1,452,339 and 1,160,409; and reversed with regard to
Registration No. 1,940,288.
E. J. Seeherman
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board